Split How Many Ways?--A Single Verdict on Damages Requires A New Damages Trial Following Post-Trial Invalidation of One of the Two Asserted Patents

On February 24, 2016, District Judge Jed S. Rakoff ordered a new trial as to the damages awarded against defendants Barnes & Noble, Inc., Barnesandnoble.com LLC, and NOOK Media LLC’s (collectively “B&N”) for their popular e-reader device, the Nook. In November 2014, a jury had returned a verdict awarding Plaintiff Adrea, LLC (“Adrea”) $1.33 million based on the infringement of two of its patents: U.S. Patent Nos. 7,299,501 (“the ‘501 patent”) and 7,620,703 (“the ‘703 patent”).

Following trial, the court had ruled the ‘501 patent invalid because it was directed toward patent-ineligible subject matter. The jury, however, was not asked to allocate its $1.33 million award between the two patents found to be infringed by the Nook. Judge Rakoff granted a new trial for the limited purpose of determining damages resulting from infringement of the ‘703 patent. The court based its decision on “the normal rule” that a single verdict on damages without apportionment between patents requires a new trial as to damages.

The court also denied B&N’s motion for judgment as a matter of law, explaining that there was ample evidence from both parties’ expert witnesses to support a jury finding that the ‘703 patent was both valid and infringed by the Nook. Independent Claim 1 of the ‘703 patent specifically “does not require a user to access a web browser,” so B&N argued that the Nook’s “Shop” application was in fact a web browser. The court pointed to evidence that access to third-party web pages in the Nook “was confined to clicking on links to navigate the wider internet, unlike, for instance, a full browser where a URL can be entered.” Claim 13 of the ‘703 patent is a method for accessing a server requiring only “a single user input,” so B&N argued that the Nook required a user to turn it on, connect to a home network, and then press the “Shop” button to initiate a request to the server. The court pointed out that, because “all electronic devices must be turned on to do anything,” “a reasonable jury could have concluded that pushing the Nook’s Shop button is a ‘single user input’ . . . .”

Finally, the court refused to reconsider its grant of summary judgment dismissing Adrea’s claim of induced infringement of Claim 1 of U.S. Patent No. 7,298,851. Adrea argued that the Federal Circuit’s decision in Akamai Technologies, Inc. v. Limelight Technologies, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc) (“Akamai III”) expanded liability for direct infringement under § 271(a) and as such broadened the scope of induced infringement under § 271(b). The court disagreed, explaining that Akamai III did not discuss induced infringement and while “the Supreme Court did invite the Federal Circuit to reconsider the scope of § 271(a) liability, it did not discuss how any expansion of § 271(a) would change its decision regarding § 271(b).”